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licensing

March 10, 2016

Several years ago, at the behest of Israel patent practitioners who were miffed that their lawyer colleagues receive a cute picture ID card every year from the bar association, the Israel PTO began issuing similar ID cards to licensed patent practitioners. Personally I never quite understood the need for this: it doesn't get me free parking anywhere or a discount on consumer goods, and if I were single there are many, many techniques I'd use before pulling out my patent practitioner card if I was trying to impress a woman. But I guess it makes some people feel official.

This week, a colleague received such an ID card in the envelope shown at right (click to enlarge, if you dare). As shown in the picture, the letter was stamped February 28, which meant it took more than a week to arrive, even though the ILPTO and the post office in question are only a few miles apart. But that's Israel Post for you. Also as shown in the picture, the envelope was addressed to (and the enclosed card was for) a practitioner named Mirit, who works in one of the offices in Tel-Aviv. The problem, also shown in the picture, although not apparent unless you go and check the patent practitioner list on the ILPTO web site, is that the address listed on the computer-generated mailing label was for a P.O. box belonging to a different office, one in Jerusalem.

It turns out this wasn't an isolated incident. Another colleague also received someone else's card, and Mirit's own office, which employs a large number of patent practitioners, reportedly received a like number of cards for people who don't work for that office.

Presumably the person preparing the mailing list somehow shifted one of the columns in the Excel spreadsheet the Office uses to keep track of practitioners, creating this massive mis-match. Or maybe the Office is using a HAL-9000 computer and it's reached the creative phase of its life.

Isn't it good to know that the ILPTO is planning to be a fully electronic office in just three months' time?

July 06, 2015

In 2014 we wrote about a report from the National Academy of Inventors and the Intellectual Property Owners Association which listed the universities worldwide that received the most U.S. utility patents in 2012. That same report for 2014 has now been issued, and once again, the tech transfer companies of the Technion, Weizmann Institute, Hebrew University and Tel-Aviv University all made the list, with 65, 41, 30 and 52 US patents, respectively, but this time they were joined by Ben Gurion University of the Negev, with 22 patents (sharing the final spot on the list with seven other universities). The University of California again topped the list, with 453 patents. Again, of the top 100, most of the non-US universities are located in the Far East (27). The Ecole Polytechnique, Federale de Lausanne was again the only entry for a European university, coming at 86th place with 25 patents, but this time there were three entries for Saudi universities instead of just one.

Of course, numbers of patents are a proxy for who’s doing inventive work, but tell us nothing about the value of that work. Princeton University, not even on the list, is still collecting licensing revenues for the patent that protects the active ingredient in Eli Lilly’s Alimta® lung cancer drug; by 2010 those revenues had already paid for a new $280 million chemistry building. It’s a safe bet that most of the patents obtained by universities in 2014 will generate no licensing revenue.

Hat tip to Don Zuhn at PatentDocs for posting a piece earlier today about the 2014 NAI/IPO report.

February 16, 2015

Israel has national elections next month, in which, yet again, Israelis will get to go to the polls to vote for a party that won’t represent them. I suppose that’s better than not getting to go to polls to achieve the same result, which is what transpires in the PA. Unfortunately, based on what gets reported in the mainstream media, we have no idea as to the views of the leading candidates on the issues of the day, because for the most part we’ve been reading and hearing about media-manufactured crises crudely designed to embarrass the current prime minister, and lots of mud-slinging between the heads of the different parties. Including the most succinct expression of what’s on the mind of the present opposition heads, the bumper sticker reading “Anyone but Bibi”.

Over the weekend, the PM’s Likud party came out with a new anti-left campaign video, which shows some ISIS a-holes in a pickup truck listening to an Arabic hip-hop song. They stop, ask someone for directions to Jerusalem, and are told to turn left (which they do, at which point we can see said bumper sticker - in Hebrew - on the back of the truck. Cute.) This is followed by a The-left-will-give-into-terror-only-the-Likud-will-keep-you-safe message. After the ad’s release, the usual suspects on the political left trotted out their usual responses – “incitement” (whatever the heck that’s supposed to mean), beneath contempt, beyond the pale, there should be a criminal investigation, etcetera. Ho-hum.

More interesting to this IP practitioner was this report of the reaction of the band that wrote and performed the rap song used in the video, a couple of Jordanian guys who call themselves “Palestinians”: they say that the Likud didn’t obtain their permission to use the video, and that by associating them with ISIS (which – surprise! – is not particularly popular in parts of Jordan right now after immolating a Jordanian pilot), the Likud has placed their lives in danger. They’re threatening legal action.

Of course, this claim got me to thinking, what legal action could they take, and where could they take it? I would think their main goal would be to get the video taken down, and perhaps to receive some sort of compensation for its unauthorized use. Inasmuch as the Likud used a significant portion of the song, and it plays through nearly the whole video, I don’t think “fair use” would be much of a defense. So an injunction is in principle a possibility, as is financial remuneration.

But where to seek such redress? I suppose they could approach a Jordanian court. I don’t know anything about Jordanian copyright law, but even if they were able to get an injunction and/or a monetary judgment there, good luck enforcing it here in Israel in a timely fashion, if at all.

More promising would be enforcement in Israel. Maybe. Jordan is member of the Bern Convention, so from the Israeli perspective, if under Jordanian law copyright inhered in their song as soon as it was fixed in a tangible medium, then per section 9 of the Israel copyright statute the song also became copyrighted in Israel at the same time. Moreover, Israeli courts grant injunctions for IP infringement, and there is statutory compensation for copyright infringement even in the absence of proof of damage.

There is, of course, the technical matter of finding a lawyer who would represent them: since 2000, the Jordanian Bar Association has forbidden its members from having any contact with Israelis, let alone representing them. So in this case the band members would need to retain an Israeli lawyer directly, one who isn’t bothered by the asymmetry in representing someone from a country where that lawyer himself couldn’t obtain representation. However, I have no doubt that such creatures exist, including some who would take a perverse pleasure in representing the band in this case. It wouldn’t be the first time Israel’s openness and tolerance proved to be its undoing.

After retaining an Israeli lawyer, the band members would need to get a judge’s attention soon; obtaining an injunction after the elections would by a Pyrrhic victory. While there are procedures for obtaining emergency injunctions, I’m not going to speculate on whether or not an Israeli judge would grant such a motion in this case, and if he doesn’t, the case might not be heard for years. And here’s a bit of (not so) heretical speculation: the alacrity with which the case is handled might depend on the judge’s political views.

In addition to the straightforward assertion of infringement for use of the song without permission, the band members would also, apparently, have a claim for infringement of their “moral rights” per sections 45 and 46 of the statute to have their names associated with their work, and possibly for a derogatory association between them and the song by virtue of its being used in a Likud advertisement.

If infringement is found, the authors could receive up to 100,000 NIS (about $25K) without proof of injury. But since the big political parties routinely go into debt to finance their campaigns, and then make the public pay for the shortfall, I wouldn’t count on monetary compensation if I were a member of the band.

Of course, the more obvious, faster and surer way to get the clip taken down is to file a copyright complaint with Youtube, where the clip is hosted. Or maybe it’s not so obvious: as of this writing, the clip is still up.

It’s a safe bet that even if the clip comes down on Youtube, it will be reposted on Youtube and other clip-sharing services.

June 13, 2014

Yesterday Elon Musk of Tesla Motors put up this blog post, in which he is apparently trying to say that as long as he's in charge, Telsa won't enforce any of its patents, because he wants to encourage others to develop sustainable transportation. (That reading of it seems to be consensus among tech business writers, such as Will Oremus at Slate.)

Inasmuch as none of the big automakers are trying to copy Tesla or even make a serious run at the non-hydrocarbon burning vehicle market, a point that Musk makes in his post, there seems to be little downside to taking this stance, and far be it for me to second guess his business strategy. As a lawyer, however, I ask myself if his promise is backed up by action. For example, by dedicating Tesla's patents to the public, something that can be done through the USPTO.

A quick, non-exhaustive sample out of the over 100 US patents issued to Tesla Motors indicates that so far, such a step hasn't been taken. For instance, as of this writing, US 8421469 is still listed in the assignment listings as being owned by Tesla Motors, and there is nothing in PAIR showing that the patent has been dedicated to the public. Same thing for US 7741750, which was renewed last year, (and along with ownership by Tesla Motors shows with a security interest on record to Midland Loan Services, Inc.) Ditto for US 7404720. The same attorney, with his address given as Tesla's Palo Alto addressm, is listed as the contact person for all three patents.

I do not doubt Mr. Musk's sincerity, and perhaps his online statements would be construed by a court as constituting a dedication the public, or an offer for a non-royalty bearing license, or a covenant not to sue. But until there's something in the record of the patents themselves to corroborate his statements, it's hard not to advise a client thinking of using technology covered by Tesla's patents to obtain written permission to do so before proceeding. Then again, as my brother the US patent litigator noted, the announcement says "Tesla will not *initiate* lawsuits against anyone who, in good faith, wants to use our technology", language which implies that Tesla wants to reserve the right to sue if sued, or if it feels someone is using the technology for purposes that Tesla doesn't approve of. So this statement may be all that we see from Tesla on the matter.

On the humorous side, for those of you who remember Highland Applicance (of blessed memory), the title of his post, "All Our Patent Are Belong To You", reminds me of this classic commercial:

January 08, 2014

Today Don Zuhn at PatentDocs posted about a report from the National Academy of Inventors and the Intellectual Property Owners Association, which lists the universities worldwide that received the most U.S. utility patents in 2012. The University of California tops the list with 357 patents; last on the list is Seoul National University Industry Foundation with 18 patents. Of the top 100, most of the non-US universities are located in the Far East (27). There is only one entry for a European university (Ecole Polytechnique, Federale de Lausanne, coming at 94th place with 20 patents) and one entry for the King Fahd University of Petroleum and Minerals in Saudi Arabia with 57 patents. The tech transfer companies of the Technion, Weizmann Institute, Hebrew University and Tel-Aviv University all made the list, with 30, 35, 30 and 37 patents, respectively.

While numbers of patents per se aren’t necessarily a measure of the patentee’s successful contributions to commerce, it’s nevertheless impressive that Israel, with a population significantly smaller than those of any of the other countries represented on the list (unless one counts Hong Kong as separate from China), and which has to devote a larger proportion of its budget to defense than the other countries, has four universities on the list (out of seven Israeli universities total). And according to this slideshow, and this news article, and this publication, Hebrew U. (Yissum), Weizmann (Yeda) and Technion have licensing revenues on par with those of the leading US universities.